Ohio's Anti-Piracy Statute Preempted by Federal Copyright Law
Ohio's First District Court of Appeals ruled last week that the state's "Record Piracy" statute, 13 Ohio Rev. Code, § 133.52, is preempted by federal law, and thus invalid. This article will discuss federal preemption in general and then go on to describe the Court's analysis in this case. For those of you who are really interested in copyright law, the article will conclude by revisiting U.S. v. Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004), where a federal court used a similar analysis to validate the constitutionality of a federal anti-bootlegging statute.
Federal Preemption
Article VI, Section 1, Clause 2 of the United States Constitution (the so-called “Supremacy Clause”) states, “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the judcges in every State shall be bound thereby ,any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.” This Clause mandates that federal law overrides any state regulation where there is an “actual” conflict between the two. Copyright law utilizes a mechanism called “express preemption,” meaning that the law itself expressly states that it will override state and common laws that implicate “legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by [federal copyright law].” 17 U.S.C. § 301(a).
[Feel free to skip this paragraph if you are not interested in other forms of federal preemption.]
Absent express preemption, a Court will usually inquire into (1) the pervasiveness of the federal regulatory enactments in the regulatory field at issue (e.g., whether the laws enacted by Congress are so broad-reaching that it can be inferred that Congress was attempting to “occupy” the field and did not mean to leave room for the States to add to the regulatory scheme; this is also called “implied preemption”); (2) the need for national uniformity in the field at issue; in this case the Court looks at the field of law rather than the intent of Congress, and tries to determine whether there is a dominant federal interest in keeping laws in the field completely uniform across the States; and (3) the likelihood that administrators of the federal program will run afoul of a state's laws in that field. These factors have been boiled down to a judicial determination of whether the state regulatory scheme facilitates or is detrimental to the purpose and objectives of the federal statute; a highly fact-specific analysis.
Ohio's Anti-Piracy Statute
13 Ohio Rev. Code, § 133.52 makes it a violation to transcribe or record any any recorded sounds without the consent of the author, and also to manufacture, sell or distribute for profit any recordings without “clearly and conspicuously” disclosing the name and street address of the manufacturer of the recording, and the name of the performer or group whose performance is recorded.
The Copyright Clause of the United States Constitution gives Congress the authority to grant authors and inventors the exclusive right to their “Writings and Discoveries.” U.S. Const. Art. I, § 8, cl. 8. Congress, in legislating copyright law, translated “Writings” to mean “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). Therefore, in the case of audio works, copyright only protects those that have been recorded to a piece of media (there are some exceptions, as well as other laws to fill in gaps I will discuss some of this in the paragraph on bootlegging, below).
State v. Boyd: Facts and Analysis
The recently decided Ohio case was State v. Boyd, 2010-Ohio-4313 (Ohio App. 2010). The original case was brought against Mr. Boyd after a policeman discovered him selling DVD copies of pornographic movies that he had downloaded from the Internet. Boyd was convicted and sentenced in his original trial, and then appealed the decision with the contention that the statute he was convicted under is preempted by federal law.
After describing the Copyright Act's express preemption of state-law actions, the Court laid out a two-part test to determine whether Ohio's law could be said to be in direct conflict with federal law. The two inquiries were: (1) whether the works covered by the state law are fixed in a tangible medium of expression (the subject matter of copyright law); and (2) whether the rights addressed by the state law are equivalent to the rights addressed by copyright. Boyd 2010-Ohio-4313 at 4. The court quickly dispatched with the first prong by determining that the DVDs in question were covered by copyright law, and noting that neither party was claiming otherwise. Id.
As to the second inquiry, the court stated that a right controlled in the Ohio statute would be “equivalent to one of the rights comprised by copyright if it 'is infringed by the mere act of reproduction, performance, distribution, or display.'” Id. (citing State v. Perry, 83 Ohio St.3d 41, 42 (1998)). To make the determination that a state law does not impose liability for the mere act of reproduction, performance, distribution or display, the law must require an “extra element,” and that element “must not only distinguish the claim from a claim in copyright but must also change the state law claim so that it is 'qualitatively different from a copyright infringement claim.” Boyd, 010-Ohio-4313 at 4-5 (quoting Perry, 83 Ohio St.3d at 43) (emphasis in original). The court offered one example of valid extra in citing State v. Moning, 2002-Ohio-5097 (Ohio App. 2002), where Moning, a Cincinnati police officer, ran a background and conviction check for personal reasons on a person that he did not like, despite having signed an agreement to use the database only for legitimate law enforcement purposes. Id. at 2-3. Moning was prosecuted and convicted under an Ohio statute that read, “No person shall knowingly gain access to, attempt to gain access to, or cause access to be gained to any computer,...system,...network, telecommunications device, telecommunications service, or information service without [or beyond] the [express or implied] consent of...the owner...or information service or other person authorized to give consent by the owner.” 2913 Ohio Rev. Code § 2913.04. The Court in this case held that the element of the crime making it legal to access a computer “beyond” the consent given by the owner was sufficient to satisfy the “extra element” test. Moning, 2002-Ohio-5097 at 5.
The Boyd Court, after running its analysis in this case, stated, “The entire gist of the offense is using the recording without the owner's consent, and the record shows that Boyd engaged in conduct that was covered by the federal copyright laws. And the Copyright Act has a mechanism for criminal enforcement.” Boyd, 010-Ohio-4313 at 6. I believe this is indeed the logical conclusion in this case, as it's plain to see that, under the Ohio statute, one would be liable merely for copying or distributing a work, with no extra element needed. Since these actions are covered in copyright, the statute is clearly preempted.
Bootlegging
The reason this Ohio case reminded me of U.S. v. Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004) is because that the Court in Martignon used (wrongly, in my opinion) a similar approach in determining whether the “anti-bootleg statute,” 18 U.S.C. § 2319A, was unconstitutional in that it violated the “limited times” provision of the Copyright Clause; mainly, the Court in Martignon compared the rights conferred by the statute with the rights conferred by copyright, similar to the second prong of the test used in Boyd.
The federal statute in question imposes criminal penalties on an individual who records, transmits or distributes audio from a live musical performance for financial or commercial gain and without the consent of the performers. 18 U.S.C. § 2319A(a). Note the main difference between this case and Boyd: live performances, unlike DVDs, are not “fixed in any tangible medium of expression,” and are therefore not covered by the laws of copyright. Before the enactment of this legislation, various states had created a patchwork of anti-bootlegging regulations, but no protection had yet been afforded to live performances under federal law.
The defendant (Martignon) ran a business in which he sold recordings of live performances. After he was indicted under the statute, Martignon argued that the statute was rooted in copyright law (afterall, its objective was to provide protection for the works of artists) and, because it banned the behavior in perpetuity, it exceeded the authority given to Congress by the Constitution of the United States. Martignon also argued that the law violated the “writing” requirement because it extended protection to works that were not fixed in any medium. The lower court looked at the subject matter the statute was enacted to protect (artistic expression) and agreed with Martignon that it should thus be forced to adhere to the limitations iterated in the Copyright Clause. The Second Circuit Court of Appeals, instead of looking at the subject matter of the law, compared the rights conferred by the statute in question to the rights conferred by the Copyright Act. The Court determined that the statute was not a use of the power conferred onto Congress under the Copyright Clause because it imposed criminal liability whereas copyright law confers property rights to an author. The Court then went on to ask whether the law was constitutional under any other enumerated power, and determined that the statute was indeed a valid use of Congress' authority under the Commerce Clause (conferring the power to regulate commerce among the states).
It is my opinion that the Court in Martignon got it wrong for a few reasons. First, the analysis the Martignon Court used would not work for 2319A's sister statute, 17 U.S.C. § 1101,which imposes civil penalties for the exact same behavior, stemming from property rights granted to the performer (just like the Copyright Act).i Another problem is that the Court wrongly asserts that the Copyright Act does not impose criminal penalties; however, as the Court pointed out in Boyd, the Copyright Act actually does contain a mechanism for criminal enforcement. See Boyd, 010-Ohio-4313 at 6; see also 17U.S.C. 2506, 18 U.S.C. 2319 (the statute just preceding the statute at issue in this case). The last and largest issue with this decision is that the Court used the Copyright Act to determine whether a law was validly authorized under the Copyright Clause. It does not make sense to use one law to to validate the constitutionality of the other; after all, that is why the Constitution exists. The Court should have compared the purpose of the statute with the enumerated powers granted to Congress. The Copyright Clause says that Congress may enact laws to promote the progress of science and useful arts, subject to specific limitations; if the purpose of § 2319A is to promote science and/or useful arts – and I can think of no other reason why Congress would care if someone distributed recordings of live performances – then it should be subject to the constitutional restrictions on the use of that particular power.
